Bernstein, Hiram

Bernstein,Hiram

To:
Rgray@houcrt.com

Subject:
RE: Comments

Thank you for taking the time to resubmit the comments. A
purpose of the comment list, which will -be- posted on our web
cite, is to alert those whose comments may have fallen through
the cracks or not yet wound its way to me. I will be sure to
include your comments as part of the comment package that is to
be reviewed.

Original Message-

From:
Rgray@houcrt.com [SMTP:Rgray@houcrt.coml

Sent:
Monday, December 14,1998 5:24 PM

To:
Bernstein, Hiram

Subject:
Comments

Dear Mr. Bernstein,

At the end of October, I submitted comments about the
proposed changes to the Patent Office rules. I just got an
email from a member of our firm (Conley, Rose & Tayon) with
an appended list of people who submitted comments. Imagine, my
name wasn't on the list! Well, perhaps its not as bad as all
that, but I thought I'd re-submit my comments to make sure you
got them:

To Whom it May Concern,

Thank you for soliciting comments about the proposed rule
changes. After much thought, I have a few suggestions:

One proposed rule change is to require applicants to
describe uniquely each piece of submitted prior art after 1 0
with respect to each independent claim. As a former examiner, I
can understand the difficulty in receiving a mountain of cited
prior art with no explanation. However, I believe this proposed
rule change is overly ambitious. The Examiner spends his days
flipping through the shoes, learning to determine quickly
whether a particular patent is relevant or not. Surely it would
not be overly burdensome to draw the line for the proposed rule
change at 20 rather than 1 0, especially in view of the fact
that the required statements would be with regard to each
independent claim and possibly dependent claims.

This requirement also creates a disincentive to submit all
the material art and encourages relevancy decisions by the
Applicant instead of the Examiner. While the overall structure
of the duty of candor does not change, any disincentive to
provide the PTO with known and relevant art should be
scrutinized closely. Further, how is an Applicant supposed to
decide which ten to choose, or how to phrase his statements? It
creates a landmine for allegations of inequitable conduct,
already a test that requires extensive inferences and so is
subject to imprecision. Consequently, costs of litigation are
sure to increase. Costs of prosecution are also sure to
increase because the registered practitioner must very
carefully review each and every reference both because of the
new statement swearing that he personally reviewed all the
references and because he cannot risk any imprecision in
describing each reference. At a day a reference, this could
easily add $20,000 (that's twenty thousand) dollars to the cost
of drafting a patent application for 20 references or fewer.
Talk about a burden!

I propose that the rule require a statement that the
references have been reviewed by the inventor OR the
practitioner, and that a unique description of each citation's
importance be included above TWENTY references. If necessary,
the PTO can raise its fees, but it still will be cheaper to the
applicant than the result of the proposed rule changes.